Philippines

Mirandah Asia’s office in the Philippines is always efficient in the handling of client matters, providing the seamlessly professional level of service that only local specialists can. The country is primed for rapid development, so our expertise is imperative to ensure that your IP rights are protected.

Overview

The first laws protecting IP rights were enacted in the Philippines in 1947. These were later enshrined in the 1973 Constitution, which provides that “the exclusive right to inventions, writings and artistic creations shall be secured to inventors, authors, and artists for a limited period” and in the 1987 Constitution, which explicitly mandates that the State shall protect intellectual property. In 1980, the Philippines became a member of the World Intellectual Property Organization [WIPO], a milestone in the establishment of the country’s IP landscape.

To further boost the country’s IP landscape, the Philippine government increased its efforts in IP protection. In 1992, the Philippine Association of Certified Patent Agents [PACPA] was incorporated, thereby recognising and promoting the patent agent profession in the Philippines.

This was followed by a series of significant legislative and regulatory reforms to strengthen IP protection and enforcement. On 1 January 1998, the Philippine government made it a State policy to protect and promote intellectual property rights, leading to the establishment of the Intellectual Property Office of the Philippines (IPOPHL), the government body that oversees the enforcement of IPRs.

Growth of the Philippines’ IP Landscape

Today, the country continues in its efforts in IP protection. The Philippines has recently enacted several policy initiatives to allow the ratification of several international IPR treaties, such as the Nice Agreement on the classification of goods and services in trademark applications; the Vienna Agreement on the classification of figurative parts of trademarks; the Singapore Trademark Law Treaty, which harmonizes various trademark prosecution procedures; and the Hague Agreement which provides for a centralized design registration system.

As contained in the 2016 Special Report of the US Trade Representative, the Philippines has also made some alliances with international organizations such as the Business Action to Stop Counterfeiting and Piracy (BASCAP) to conduct crackdowns on counterfeits. All these initiatives have enhanced the country’s position in IP.

The Philippines is now on its way to becoming one of the leading countries in IP in the ASEAN region.

About 36 months for PCT national phase filings
About 52 months for Convention and Direct filings
About 6 months for Utility Models about 24-48 months from filing in the Philippines

Official language for patent prosecution

English

Non-patentable subject matter

Discoveries, scientific theories and mathematical method

Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers

Methods of medical treatment for the human or animal body for surgery

Plant varieties or animal breeds

Aesthetic creations

Anything that is contrary to public order or morality

Grace period for prior disclosure or sale

Up to 12 months before the first filing

Major prosecution events (calculated from priority or filing date)

Event

PCT-National Phase

Non-PCT

Request for Search

12 months

18 months

Request for Examination

34 months

21 months

Filing Due Date

30 months

12 months

Payment of Annual Fees

48 months

48 months

Renewal (after grant)

Every year

Every year

Extension of deadlines

(i) 2 months for responding to Office Actions
(ii) 18 months for Search and Examination events
(iii) 2 months for most other deadlines

Pharmaceutical Data Exclusivity Laws

Not available

Parallel Imports

Permissible

Term of patent

20 years

Patent Tern Extension

Not available

Restoration of Lapsed Patent

No specific provisions are present. However, in case the application is pending examination, an application can be revived by filing a Petition for Revival within 4 months from the mailing date of the Notice of Abandonment.

Search and Examination

Local examination of patents is not compulsory. Search and Examination reports established in other countries or during PCT international phase can be relied upon for the purposes of patent grant in the Philippines.

Not available if registered mark. A mark can only be restored if during the pendency of the application, the trademark owner files a Petition for Revival within 3 months from mailing date of Notice of Abandonment, provided the cause of abandonment is not due to failure to file the 3rd year Declaration of Actual Use

Compulsory period of use to avoid cancellation action

3 consecutive years

Parallel Imports

Allowable, except in cases where an exclusive importer/distributor is appointed in the Philippines, and allowing parallel imports may constitute a breach of contractual obligation

Use

(a) 3rd year Declaration of Actual Use
– Required within 3 years from filing date of application
– Original deadline can be extended once for a period of 6 months
– Mandatory regardless of basis of application
(b) 5th year Declaration of Actual Use
– Required to be filed on the 5th year from date of registration